Protecting Your Intellectual Property in a Post-AIA World

July 1, 2013

James H. Morris

(as published in IP Magazine)

What This Means To You

  • Establish internal procedures to identify inventions early and prevent premature disclosures.
  • File patent applications before any public disclosure, such as a publication or presentation, but ensure the application is well fleshed out to support the priority claim.
  • Companies should consider searching prior art before incurring patenting costs.
  • Be particularly careful when disseminating new ideas in foreign lands due to new prior art rules.
  • Third party submission can be used to influence competitor’s patent prosecution but should be treated with caution since it can potentially strengthen a competitor’s patent.

U.S. patent law has changed. On September 16, 2011, the Leahy-Smith America Invents Act (AIA) was signed into law. And on March 16, 2013, we crossed over into the land of a “first-to-file” system. The AIA represents the most significant change in the U.S. patent system since 1952 and affects many aspects of the patent law.

Although the multiple implications of the new patent system are yet to be tested in practice, there are certain issues companies should consider to better navigate the new post-AIA world.

File Applications Before Publishing

The AIA changed the fundamental, 200-plus-year-old “first-to-invent” principle of the U.S. patent system that a first person to invent could prevail over anybody who invented later but filed first. Now, under the “first-to-file” system, the first inventor to file a patent application is entitled to patent protection. This is essentially a race to the U.S. Patent and Trademark Office (USPTO), where even one day will determine a winner. But not without exceptions.

Under the old law, an inventor had one year from the date of a first public disclosure of his/her invention to file a patent application. The AIA does not entirely eliminate the one-year grace period. The inventor can still file within one year after a first disclosure and, by doing so, exclude subsequent third party disclosures from prior art. However, this may be a trap for the unwary.

The AIA designated the one-year grace period to be effective only if the pre-filing disclosure is by the inventor or a third party who obtained the subject matter of the invention from the inventor and disclosed the exact same subject matter. But in the case where the inventor describes the invention in a printed publication, after which a competitor learns about the original idea and discloses it with some modification, this disclosure may become prior art and bar the inventor from obtaining a patent.

In essence, the USPTO will treat even insubstantial changes or trivial variations of the subject matter previously disclosed by the inventor as prior art. In other words, most third party disclosures that are preceded by an inventor’s disclosure may destroy the inventor’s right to a patent.

Relying on intentional disclosures to establish a priority date for the invention would appear to be a risky strategy. In general, inventors should avoid disclosing their invention before filing. If a public disclosure does take place, either intentionally or not, it is crucial to file a patent application promptly following the disclosure.

Importantly, the race to the USPTO under the AIA creates tension between filing quickly and ensuring applications are complete. It is advisable to avoid relying on “quick” provisional applications that neither fully describe an invention nor support claims to preserve the filing date. A weak provisional application may give an inventor a false sense of security that he/she is safe for a year when a utility patent application may be filed. But this will be the case only for claims in the utility application that are fully supported by the provisional application and provided no third party disclosure with variations on the invention takes place before the utility application is filed.

Be Aware of the Expanded Definition of Prior Art

The AIA dramatically increases the scope of what constitutes prior art to a patent application. Not only prior publications, but any public disclosure, such as a presentation, something in public use, on sale, or otherwise available to the public anywhere in the world in any language can be used as prior art.

To save costs down the road, a company may consider searching prior art to determine if the invention had been previously disclosed. Unfortunately, in many scenarios, it may not be feasible to find out whether the invention had been publicly used or sold abroad, much less if in a foreign language. Therefore, any company with a presence in other countries should take measures to avoid premature dissemination of original ideas, including through use, sale or offer to sell.

The AIA did not specify whether secret sales and commercial uses prior to filing would escape qualifying as prior art under the new regime. Accordingly, they should be treated with caution until the courts weigh in on these activities.

Another major change is that published U.S. patent applications and Patent Cooperation Treaty (PCT) applications become prior art as of their foreign filing date, even if the foreign priority application is in a foreign language.

Further, it is important to determine which – pre-AIA or AIA – provisions apply to an application filed on or after March 16, 2013 and claiming priority to an application (provisional, utility, foreign, or PCT designating U.S.) filed before March 16, 2013. If such a “transition” application includes at least one claim covering subject matter added after March 15, 2013, the AIA prior art provisions will apply to all claims, even if the “AIA” claim is later canceled.

For example, if a utility application filed after March 15, 2013 and claiming priority to a provisional application filed before March 16, 2013 includes a claim that is not supported by the provisional application and therefore has an effective filing date after March 15, 2013, all claims of the utility application will be treated under AIA.

To ensure that a transition application is treated under the pre-AIA “first to file” law, the application should include only claims that are fully supported by a provisional application or foreign priority application. To protect additional subject matter, a continuation-in-part or new application can be filed instead.

Take Advantage of Common Ownership or Joint Research Agreement

An important exception to the prior art definition under the AIA is common ownership. The AIA disqualifies as prior art any previously disclosed subject matter owned by the same person or subject to an obligation of assignment to the same person as a later claimed invention. Under such circumstances, the previously disclosed subject matter will not be prior art to the claimed invention filed within a year from the disclosure for purposes of both novelty and obviousness. If a joint research agreement between parties is in effect at the time of filing an application, earlier published applications or patents also derived under that agreement are excluded from the prior art.

Establish Internal Procedures

Companies should establish internal procedures to identify inventions early and not delay filings. These procedures may involve providing proper training to educate employees on identifying and reporting inventions, setting up recurring meetings to discuss research and development progress, raising employees’ awareness of implications of public disclosures, and monitoring employees’ activities to prevent premature disclosures. As before, it is also important to keep records of the conception of an invention and its reduction to practice.

Consider Third Party Submissions

The AIA established a new way to influence competitors’ patent prosecution. Companies can monitor competitors’ published applications and, if desired, file a third party submission within the six months period after a patent application is published or before the mailing of a first Office Action, whichever occurs later. These submissions can include patents, published patent applications, or other printed publications accompanied by a concise description of their relevance. Even if a reference is already of record, it can be resubmitted via a third party submission to point out its particular relevance.

While the submission must be signed (e.g., by a patent attorney), the real party in interest need not be identified. Although a third party submission may be a cost effective approach to make prosecution of a competitor’s patent application more difficult, it should be used with caution because it may result in a stronger patent for the competitor if the application is eventually allowed over the submitted prior art.

Weigh the Benefits of Supplemental Examination

The AIA introduces a new mechanism for a patent owner to correct defects in the prosecution of a patent that may render the patent unenforceable. A patent owner can request supplemental examination of a patent for the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. Any information may be presented, including printed publications and evidence of prior sales and public uses.

A supplemental examination can inoculate a patent owner from an inequitable conduct charge in a patent infringement action. To be of use, a supplemental examination should be concluded before a patent infringement action is filed by a patent owner; thus, it is important to identify any potential problems with a patent shortly after it is granted.

By taking these considerations into account, companies may be better-equipped to make sound business and legal decisions in a post-AIA world. Smart companies will take proper precautions to protect their own intellectual property, as well as understand competitors’ patent activity.